Wednesday, February 12, 2014

Test Your TTAB Judge-Ability On This Service Mark Specimen of Use

When applicant Sports Outdoor And Recreation sought to register the marks JETTE and X-RAY for "providing theme park services," the PTO rejected the specimen of use under Sections 1 and 45 of the Act, maintaining that the specimen (a one page advertisement, shown immediately below) did not show an association of the marks with the identified services. Applicant appealed. How do you think this came out? In re Sports Outdoor And Recreation (SOAR) Park, Serial Nos. 85108918 and 85108928 (February 10, 2014) [not precedential].

Click on picture for larger image

The examining attorney argued that the marks do not appear as source indicators for theme park services. Instead, consumers will view the terms as indicators for applicant's membership services. Applicant SOAR asserted that membership is essentially the purchase of tickets for the park (Morgan's Wonderland), and the membership package is an integral part of the identified services, embodying the intangible rights that are being exchanged when customers use the park services.

The Board noted that the specimen of use makes no reference to a "theme park." The examining attorney, however, conceded that "the exact nature of the services does not need to be specified in the specimen." Moreover, other wording on the specimen makes it clear that "what is offered is a place in which to play." The question, then, was whether the specimen of use shows a "direct association" between the marks and the "park."

The examining attorney argues that "Membership services are not theme park services…." However, the examining attorney does not explain what she means by “membership services,” nor does she explain the nature of the membership services that are supposedly offered by the advertisement. There is nothing else in the record to suggest that applicant is operating any kind of organized association, society, or other conventional type of membership organization.

The Board found that customers would understand the specimen as an advertisement for a park where one can play. In context, a "member" is a "customer," and the word “membership” is merely an alternative word for a package of admission tickets.

The marks JETTE and X-RAY are closely associated with the offered services: each appears a few lines above the offer of tickets to the park. In sum, the specimen advertisement demonstrates us of the subject marks as service marks.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  So how did you do? Do you think that "Jette Membership" and "X-Ray Membership" are unitary phrases?

Text Copyright John L. Welch 2014.


At 9:44 AM, Anonymous Anonymous said...

The USPTO needs to issue some guidance on this issue because they routinely reject specimens that show use of a trademark for a product ingredient or other component of a product or service when such a component or ingredient can be identified (perhaps unlike here where the "ingredient" is integral to providing the service). There should be no line drawing in this regard. As long as the mark is identified IN SOME WAY with the product or service it's a mark...period. If not, then what is it??

At 9:46 AM, Anonymous Anonymous said...

Not a unitary phrase. "Membership" is generic.


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